Judge Swain Allows Costco To Proceed With Defense That “Tiffany” Trademark Has Become Generic

In an opinion today, Judge Swain denied Tiffany’s pre-discovery summary judgment motion in a suit it brought against Costco for trademark infringement. She found that there were fact questions as to whether, as Costco contends, the trademark “Tiffany” has become a generic term for certain types of ring settings:

In support of its argument that “Tiffany” has acquired a generic meaning when used to refer to a type or style of ring setting, Costco offers excerpts from dictionary definitions of “tiffany” and “Tiffany setting,” a preliminary report by a lexicographer, evidence of generic use of the term “Tiffany setting” by jewelry manufacturers, retailers and consumers, and examples of the generic use of the term “tiffany setting” in publications. While none of the evidence is by any means conclusive of the proposition advanced by Costco it is, taken together and read in the light most favorable to Costco in this pre-discovery context, sufficient to frame a genuine factual dispute as to whether the terms “Tiffany” and/or “Tiffany Setting” have a primarily generic meaning in the minds of members of the general public in the context of ring settings.

Steptoe & Johnson LLP

Stay Connected

About Steptoe

In more than 100 years of practice, Steptoe has earned an international reputation for vigorous representation of clients before governmental agencies, successful advocacy in litigation and arbitration, and creative and practical advice in structuring business transactions. Steptoe has more than 500 lawyers and other professional staff across offices in Beijing, Brussels, Chicago, London, Los Angeles, New York, Phoenix, San Francisco, and Washington. For more information, visit www.steptoe.com.